Ex Parte TANABE et al

Patent Trial and Appeal Board

Nov 13, 2018

14033717 (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/033,717 09/23/2013 Hidenori TANABE
22428 7590 11/15/2018
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
091486-0145 6510
EXAMINER
BUI,ANHT
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
11/15/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HID EN ORI TAN ABE and TAKAO ANZAI
Appeal2017-002062
Application 14/033,717
Technology Center 3700
Before MICHAEL C. ASTORINO, BENJAMIN D. M. WOOD, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-002062
Application 14/033,717
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-9. An oral hearing in accordance with 37 C.F.R. § 41.47 was held
on October 23, 2018. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
THE INVENTION
The claims are directed to a catheter assembly. Sole independent
claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A catheter assembly comprising:
a hollow catheter;
a catheter hub fixed onto a base end portion
of the catheter, the catheter hub having an internal
passage communicating with an inside of the
catheter;
a needle disposed in the catheter;
a needle hub fixed to a base end portion of
the needle, the needle hub being connectable to a
base end side of the catheter hub;
a valve element positioned to block the
internal passage of the catheter hub, the valve
element including a tubular portion, and an opening
and closing portion configured to be opened and
closed, the opening and closing portion comprising at
least one slit;
an operation member including a tubular
body, the operation member being configured such
that an opening portion of the operation member is
insertable into the opening and closing portion to
cause the base end side and a tip side of the catheter
hub to communicate with each other;
a communication unit comprising at least
one of a hole and a groove, the communication unit
being disposed on at least one of (i) an inner
periphery portion of the catheter hub where the valve
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Application 14/033,717
element is positioned, and (ii) a peripheral edge
portion of the valve element, wherein the
communication unit is configured to allow the base
end side and the tip side of the catheter hub to
communicate with each other; and
a sealing member including a tubular body,
the sealing member being disposed at a base end side
of the valve element and being configured to allow
the passage of air and prohibit the passage of liquid,
wherein the sealing member includes an
extending portion that extends into the tubular
portion of the valve element.
Yamamoto
Rosen
Basta
Hammarsten
Stout
REFERENCES
us 5,242,411
us 5,980,492
US 2005/0043684 Al
US 2007 /0196414 Al
US 2010/0204648 Al
REJECTIONS
Sept. 7, 1993
Nov. 9, 1999
Feb.24,2005
Aug.23,2007
Aug. 12, 2010
Claims 1, 2, and 7-9 are rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Stout, Basta, and Hammarsten.
Claims 3 and 4 are rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Stout, Basta, Hammarsten, and Yamamoto.
Claims 5 and 6 are rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Stout, Basta, Hammarsten, Rosen, and Yamamoto.
ANALYSIS
Claims 1, 2, and 7-9-Unpatentable over Stout, Basta, and Hammarsten
The Examiner finds that Stout teaches most of the limitations of
claim 1. Final Act. 6 (citing Stout ,r,r 61, 85, 87, 95, Figs. 5A, 9, 12). In
particular, the Examiner finds that Stout's septum 356 corresponds to the
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Application 14/033,717
claimed valve element, and grooves 60, 70 correspond to the claimed
communication unit. The Examiner acknowledges, however, that Stout does
not teach the claimed sealing member. Id. The Examiner finds that Basta's
support member 144 corresponds to the sealing member disposed at a base
end side of the valve element, the sealing member including an extending
portion that extends into the tubular portion of a valve element. Id. at 6-7
( citing Basta, Fig. 2). The Examiner asserts that one of ordinary skill in the
art would have combined Stout and Basta's sealing member to "bias the seal
to a most distal position within the passage way." Id. at 7 (citing Basta
,r 26). Acknowledging that the combination of Basta and Stout does not
teach the sealing member being configured to allow the passage of air and
prohibit the passage of liquid, the Examiner relies on Hammarsten for that
teaching. Id. Hammarsten teaches a stopper made from carboxymethyl-
saturated foam rubber, a material that is air permeable when dry but
becomes liquid-impermeable when exposed to blood. Hammarsten,
Abstract, Fig. 2. The Examiner determines that it would have been obvious
for one of ordinary skill in the art to make Basta's support member from the
Hammarsten's carboxymethyl-saturated foam rubber, "in order to stop all
flow of blood out of the IV catheter during cannulation." Id. (citing
Hammarsten ,r 37).
Appellants argue, inter alia, that there would have been no reason for
one of ordinary skill in the art to use Hammarsten' s material to make Basta' s
support member for use in Stout's device because Stout's septum 356 is
coated with a hydrophobic or polymer swelling material and therefore is
already configured to prohibit the passage of fluid. App. Br. 6. Appellants
further argue that if Basta' s support member-made from Hammarsten' s
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Application 14/033,717
material-was used in Stout's device, once it contacts blood it "would
expand into the spaces around the septum activator 380 of Stout, thus
preventing the septum activator 380 from being able to open the
septum 356." Id. at 8. Appellants also assert that if this support member
would modified to be softer to avoid this problem, it would be unable to
provide the required support. Id.
The Examiner does not dispute that a support member made from
Hammarsten's material might, when in contact with blood, expand enough
to make it impossible to open septum 356. Instead, the Examiner asserts that
it is "within the general skill of a worker in the art at the time the invention
was made to select a known material on the basis of its suitability for the
intended use as a matter of obvious design choice." Ans. 9. According to
the Examiner, "[ o ]ne of ordinary skill in the art will be motivated to make
the sealing member of Basta modified by the material disclosed by
Hammarsten to be soft enough to allow the septum activator to open the
septum but still provide enough support." Id.
In Stout's catheter assembly, the septum activator opens a pathway
through the septum to enable the free flow of fluid through the catheter
assembly. Stout ,r 13. It would have been unlikely for one of ordinary skill
to have modified Stout's device in a way that might have interfered with this
capability and, as noted above, the Examiner does not dispute that making
the support member from carboxymethyl-saturated foam rubber might have
done so. Further, the Examiner's suggestion that one of ordinary skill in the
art would have made Hammarsten's material "soft enough" to avoid this
problem assumes, without evidence, that it was known how to do so. In the
absence of such evidence, we consider this suggestion to be speculative.
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Accordingly, we are not persuaded that one of ordinary skill in the art would
have made Hammarsten' s material softer as a matter of "design choice," and
we do not sustain this rejection.
The Remaining Rejections
The Examiner's remaining rejections rely on the erroneous finding
that one of ordinary skill in the art would have used Hammarsten' s material
to make Basta's support member for use in Stout's catheter assembly. The
Examiner does not rely on any of the additional references to cure the
deficiency. Accordingly, for the reasons discussed above, we do not sustain
the Examiner's rejections of claims 3-6 as unpatentable over Stout, Basta,
Hammarsten, and additional references.
DECISION
For the above reasons, the Examiner's rejection of claims 1-9 is
reversed.
REVERSED
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